The trademark DARJEELING NOUVEAU in relation to “tea” falling in class 30 has been refused registration by the US Patent and Trademark Office's Trademark Trial and Appeal Board (Board).
The opposition primarily involved the presence of DARJEELING in the mark DARJEELING NOUVEAU applied by The Republic of Tea Inc. Tea Board of India filed the opposition on May 1, 2000.
It is an interesting case because while The Republic of Tea Inc had disclaimed DARJEELING in the mark DARJEELING NOUVEAU, the Board held that that DARJEELING in the mark DARJEELING NOUVEAU was similar to the certification mark DARJEELING.
As a counter attack The Republic of Tea Inc had moved to cancel the certification mark DARJEELING. The Board office dismissed this action of The Republic of Tea Inc.
Interestingly The Republic of Tea Inc also happens to be one of the licensees of Tea Board's DARJEELING mark.
The Board held that there is bound to be confusion because of interalia similarity in sound, appearance and overall impression. Merely by disclaiming the word DARJEELING does not mean that there will be no confusion as the disclaimer also forms the part of the trademark and cannot be forgotten. The Board further held that there are no other distinguishing elements in the mark except DARJEELING.
The Board also held that DARJEELING is geographical source indicator in relation to tea.
The recognition of DARJEELING as a geographical indication and a certification mark by the US Tribunals and stopping one of its own companies to register a trademark comprising the word DARJEELING is a significant step forward in protection of geographical and traditional wealth of India. This development augurs well for the developing Indian industry and will have global ramifications.
Friday, September 29, 2006
Wednesday, September 27, 2006
“Pioneer”ing Plasma v. Samsun(g)-who is the winner?
It appears Japanese electronics companies are in the bid to defend their territory from their Asian cousins are suing their cousins.
One such situation is where Pioneer Corporation, Japan has sued its Asian cousin Korean based electronic giant Samsung and its subsidiaries with U.S. District Court for the Eastern District of Texas in relation to patent infringement after apparently the talks between Pioneer and Samsung fell through.
Pioneer has claimed that Samsung has infringed its patents related to plasma display panel technology used primarily in television sets.
Pioneer holds a patent regarding an electrode configuration that improves plasma display quality, as well as a patent covering a manufacturing step that increases the brightness of the display.
According to Pioneer Samsung is violating both of those patents.
In the suit Pioneer is seeking the court to halt the sales of Samsung plasma displays in addition to compensation for past infringement.
According to Pioneer, Pioneer and Samsung had been negotiating in “good faith” to license the Plasma Display patent portfolio since April 2005. As the negotiations fell through, as per Pioneer litigation was necessary in order to protect the value of its intellectual property in the plasma display panels field.
Samsung obviously disagrees with Pioneer and plans to file a counter-suit against Pioneer.
Japanese electronic companies have in the past sued their Asian rival over both DRAM memory and LCD display technology. For instance in another patent infringement LG and Matsushita had locked horns over similar plasma patent. This was eventually settled in April 2005 by signing a cross-licensing agreement.
It appears this fight is for controlling the ever-increasing panel plasma market as plasma panels are the key component in plasma televisions. For instance as per a market research firm, the market for plasma televisions would nearly double to $28 billion by the year 2010.
Since the parties involved are giants, the only possible solution would be that of quid pro quo approach or in other word there would be licensing and cross licensing involved as none of the parties would want to loose their market share and would wish to have a hand in the plasma pie. By joining hand these giants would also prevent any third party to enter the fray.
As for the outcome of the battle between Pioneer and Samsung only time will tell how the matter is solved
One such situation is where Pioneer Corporation, Japan has sued its Asian cousin Korean based electronic giant Samsung and its subsidiaries with U.S. District Court for the Eastern District of Texas in relation to patent infringement after apparently the talks between Pioneer and Samsung fell through.
Pioneer has claimed that Samsung has infringed its patents related to plasma display panel technology used primarily in television sets.
Pioneer holds a patent regarding an electrode configuration that improves plasma display quality, as well as a patent covering a manufacturing step that increases the brightness of the display.
According to Pioneer Samsung is violating both of those patents.
In the suit Pioneer is seeking the court to halt the sales of Samsung plasma displays in addition to compensation for past infringement.
According to Pioneer, Pioneer and Samsung had been negotiating in “good faith” to license the Plasma Display patent portfolio since April 2005. As the negotiations fell through, as per Pioneer litigation was necessary in order to protect the value of its intellectual property in the plasma display panels field.
Samsung obviously disagrees with Pioneer and plans to file a counter-suit against Pioneer.
Japanese electronic companies have in the past sued their Asian rival over both DRAM memory and LCD display technology. For instance in another patent infringement LG and Matsushita had locked horns over similar plasma patent. This was eventually settled in April 2005 by signing a cross-licensing agreement.
It appears this fight is for controlling the ever-increasing panel plasma market as plasma panels are the key component in plasma televisions. For instance as per a market research firm, the market for plasma televisions would nearly double to $28 billion by the year 2010.
Since the parties involved are giants, the only possible solution would be that of quid pro quo approach or in other word there would be licensing and cross licensing involved as none of the parties would want to loose their market share and would wish to have a hand in the plasma pie. By joining hand these giants would also prevent any third party to enter the fray.
As for the outcome of the battle between Pioneer and Samsung only time will tell how the matter is solved
Monday, September 25, 2006
Errors and Amendments –Indian Trade Marks Act
The question that is discussed in this article is if there is a typographical and / or a clerical error in a notice of opposition or a counter statement filed with Trade Marks Registry, then can such a typographical and / or a clerical error result in the notice of opposition or counter statement being dismissed. Briefly is also discussed the effect of amendment in a notice of opposition or a counter statement.
To understand the proposition it is important the relevant section of Indian Trade Marks Registry be read and interpretation be drawn from the same.
Section 21 (7) of the Trade Marks Act, the relevant section, reads- “The Registrar, may on request, permit correction of any error in, or any amendment of, a notice of opposition or a counter statement on such terms as he thinks just”.
Thus Section 21 (7) of the Act is wide enough to encompass even amendments to the notice of opposition and counters statements leave alone errors.
“Errors” are of lower degree as compared to “amendments”. Errors envisage minor typographical and clerical mistakes and when these corrections are carried out, the same do not in any manner effect the right of the opponent or the applicant by decreasing or increasing the rights.
A typographical / clerical error cannot be taken as a basis for the notice of opposition or a counter statement as void. It is emphasized here that what has to be seen is if the opposition / counter statement is in pith and substance against the concerned application, then a mere typographical or clerical error cannot become a basis for rejection of the notice of opposition.
Thus the Learned Registrar of Trade Marks has ample powers to allow amendments of the notice of opposition including the introduction of new ground.
In this regard an interesting case is the case of Aminchand & Sons vs. Sohan Lal Bassan & Bros FAO No. 84 of 1970. Briefly the opponents at the stage of filing evidence in support of the opposition sought leave to amend the notice of opposition by introducing new ground of opposition. The Assistance Registrar refused permission to amend the notice of opposition on the ground that the Act contemplated only amendments in the nature of clerical error or some mistake on the face of record or an amendment to bring on record a subsequent change in the proprietorship of the trademark and not an amendment to introduce a new or fresh ground of objection.
The opponents appealed to the High Court at Delhi. High Court held allowing the appeal that –
(a) Registrar had ample powers to allow amendment of notice of opposition including introduction of new ground of opposition;
(b) That said power was not confined to correction of an error or an occurrence of any subsequent event;
(c) That the said powers were wide and must be construed liberally; and
(d) That the registrar had nevertheless a discretion to allow or not allow an amendment
Therefore the law is well settled in this quarter as regards the correction of typographical / clerical errors in the notice of opposition.
The catch lies in the fact that after all the discussions and debates the Court has left the discretion of Registrar to allow the amendment. Therefore all that can be said at the moment is that depending upon the facts and circumstance, the amendment of the notice of opposition may be allowed. So for instance if a new ground - which is not the change of name of the applicant or the opponent- is of such a material nature, like a ground which would never have arisen till happening of some events, then the same may be allowed.
To understand the proposition it is important the relevant section of Indian Trade Marks Registry be read and interpretation be drawn from the same.
Section 21 (7) of the Trade Marks Act, the relevant section, reads- “The Registrar, may on request, permit correction of any error in, or any amendment of, a notice of opposition or a counter statement on such terms as he thinks just”.
Thus Section 21 (7) of the Act is wide enough to encompass even amendments to the notice of opposition and counters statements leave alone errors.
“Errors” are of lower degree as compared to “amendments”. Errors envisage minor typographical and clerical mistakes and when these corrections are carried out, the same do not in any manner effect the right of the opponent or the applicant by decreasing or increasing the rights.
A typographical / clerical error cannot be taken as a basis for the notice of opposition or a counter statement as void. It is emphasized here that what has to be seen is if the opposition / counter statement is in pith and substance against the concerned application, then a mere typographical or clerical error cannot become a basis for rejection of the notice of opposition.
Thus the Learned Registrar of Trade Marks has ample powers to allow amendments of the notice of opposition including the introduction of new ground.
In this regard an interesting case is the case of Aminchand & Sons vs. Sohan Lal Bassan & Bros FAO No. 84 of 1970. Briefly the opponents at the stage of filing evidence in support of the opposition sought leave to amend the notice of opposition by introducing new ground of opposition. The Assistance Registrar refused permission to amend the notice of opposition on the ground that the Act contemplated only amendments in the nature of clerical error or some mistake on the face of record or an amendment to bring on record a subsequent change in the proprietorship of the trademark and not an amendment to introduce a new or fresh ground of objection.
The opponents appealed to the High Court at Delhi. High Court held allowing the appeal that –
(a) Registrar had ample powers to allow amendment of notice of opposition including introduction of new ground of opposition;
(b) That said power was not confined to correction of an error or an occurrence of any subsequent event;
(c) That the said powers were wide and must be construed liberally; and
(d) That the registrar had nevertheless a discretion to allow or not allow an amendment
Therefore the law is well settled in this quarter as regards the correction of typographical / clerical errors in the notice of opposition.
The catch lies in the fact that after all the discussions and debates the Court has left the discretion of Registrar to allow the amendment. Therefore all that can be said at the moment is that depending upon the facts and circumstance, the amendment of the notice of opposition may be allowed. So for instance if a new ground - which is not the change of name of the applicant or the opponent- is of such a material nature, like a ground which would never have arisen till happening of some events, then the same may be allowed.
Tuesday, September 19, 2006
Forting FORT WILLIAM
In another victory for Scotch Whisky Association (SWA) Indian Trade Marks Registry refused registration for the mark FORT WILLIAM (Label) for whisky.
In this interesting case the applicant claimed that it had use for the mark FORT WILLIAM for a long time and FORT WILLIAM was a historical landmark in Kolkata, therefore SWA cannot have any claim over the word FORT WILLIAM as being evocative of Scotland.
SWA submitted that FORT WILLIAM was a famous tourist location in Scotland. SWA further stated that FORT WILLIAM is also the site for the tallest mountain of Scotland- Ben Nevis. Furthermore Fort William was located in the Highlands, an area famous for Scotch Whisky Breweries and distillers. SWA also claimed that Fort William was know for its own distillery called Ben Nevis (Fort William) Limited and its Scotch Whisky called DEW OF BEN NEVIS. In support of its submissions, SWA provided numerous documents.
The registrar while refusing registration to the application for FORT WILLIAM held that FORT WILLIAM is a famous town in Scotland which is known for Scotch Whisky. Therefore the application for FORT WILLIAM (Label) by the applicant would in all likelihood cause confusion and deception and therefore the mark cannot granted registration.
In this interesting case the applicant claimed that it had use for the mark FORT WILLIAM for a long time and FORT WILLIAM was a historical landmark in Kolkata, therefore SWA cannot have any claim over the word FORT WILLIAM as being evocative of Scotland.
SWA submitted that FORT WILLIAM was a famous tourist location in Scotland. SWA further stated that FORT WILLIAM is also the site for the tallest mountain of Scotland- Ben Nevis. Furthermore Fort William was located in the Highlands, an area famous for Scotch Whisky Breweries and distillers. SWA also claimed that Fort William was know for its own distillery called Ben Nevis (Fort William) Limited and its Scotch Whisky called DEW OF BEN NEVIS. In support of its submissions, SWA provided numerous documents.
The registrar while refusing registration to the application for FORT WILLIAM held that FORT WILLIAM is a famous town in Scotland which is known for Scotch Whisky. Therefore the application for FORT WILLIAM (Label) by the applicant would in all likelihood cause confusion and deception and therefore the mark cannot granted registration.
Monday, September 11, 2006
Indian Trade Marks Act - Extension of time to lead evidence
In the past during the time when Trade and Merchandise Marks 1956 was in force, an opponent or / and an applicant could lead evidence as and when they desired. In other words the Registrar of Trade marks never imposed any condition to the grant of extension. The Result- the time period of deciding the opposition period was anywhere between 4 to 5 years and this is a conservative estimate.
With the passage of new Trade Marks Act of 1999 wef September 15, 2003, the time period to lead evidence was reduced to two months extendible at the most by one month calculated from the date of from the service of the notice of opposition or the services of evidence by the opponent on the applicant. Therefore maximum time of three months has been given to the opponent and applicant to lead their respective evidences in support of their submissions.
The immediate effect of this limitation to lead evidence was that the opposition proceedings have started to move faster and more and more oppositions have been appointed for final hearing in the past 3 years. Therefore it does seem that the limitation has its desired effect and of course the eagerness of lawyers and the Registrars to finish the matter has been contributory in the progress.
While this is a welcome change, there appears to one lacuna in the Trade Marks Act pertaining to seeking extension for the additional one month. The Section reads that the request for extension for a period of one month has to be filed “before” the expiry of two months.
This has led to several heartburns and problems as the lawyers depending upon which sides they are take up the plea for and against the grant of extension. Essentially the argument boils to that of Statute vs. the classic trilogy of justice, equity and good conscience.
From the point of view of statute, which if read as it is, clearly bars the filing of the evidence or refusal of the grant of extension by the Registrar. At the same time we cannot ignore the fact that if it is possible to decide a matter on merits and if the Act provides reasonable limits, then justice, equity and good conscience must prevail.
Accordingly I would say that the extension must be allowed even if the request for extension has been filed subsequent to two months. In fact to this extent the Trade Marks Act, gives discretionary powers to the Registrar whereby if the Registrar feels that a matter deserves to be granted extension then the same can be allowed.
End of the day one has to see if the Statute is meting out justice in the correct form, not by strictly following letters without the spirit. Harmonious construction of the Section is required and not strict interpretation to enjoy the benefit of the Act in letter and spirit
While this debate carries on, to draw parallel one requires to see how the Courts and Appellate Board have been treating the concept of leading evidence, even beyond the statutory three months period.
Once again strictly going by the book, the Trade Marks Act in India does not allow for an extension beyond 3 months.
At the same time in the interest of justice, equity and good conscience the Registrar should generally allows the evidence filed subsequent to the due date.
Here attention is drawn to a recent case of Asian Paints Limited v. Registrar of Trade Marks 2005(30) PTC 444 (IPAB), wherein in an appeal before the Intellectual Property Appellate Board it has been held that the Registrar enjoys the powers to extend the time for filing evidence even beyond the three month stipulated deadline.
In this interesting case it was held that the filing of evidence under the new Trade Marks Act has undergone changes of fundamental character. However the settled proposition of law is that the provisions of subordinate legislation have to be in conformity with provisions of principal legislation. It was also held that the society has vital interest in maintaining the purity of Register and for that matter should get to know the grounds for claiming the registration of the mark.
The decision in this case flowed from previous precedents and more importantly from the full Bench Judgment of Hastimal Jain v. Registrar of Trade Marks 2000 PTC 24 Del. In this judgment the court held that the extension-providing Rule in Trade Marks Act is directory, not mandatory. Therefore a direct interpretation of this is that the Registrar of Trade Marks is not under a mandate to deem the opposition as abandoned. In suitable cases, the Registrar can grant of extension for filing evidence in opposition.
From the above discussion, therefore it appears that grant of extension are directory and not mandatory. In those cases which merit extension, the extension should be given even if the request for extension is time barred.
The above decisions, I would say, are very good decisions as they take into account the not only the letter but also the spirit of law. After all what is the point of providing provisions for extensions in the system and then not allow because of a mere delay. A request for extension should be allowed to be filed at any time and such a request should be allowed as long as it is within the maximum period prescribed by the Act.
Of course there will be cases where extension are sought after the expiry of maximum limitation as prescribed, but these can be addressed upon the merits of each case and Registrar’s discretionary powers would also come in fore.
After all the decision of the opposition would effect the fate of a business and we do not want that due to technical reasons, a business comes to standstill. While malpractices have to discouraged, a reasonable explanation for filing an extension or a request for extension should be entertained.
In this backdrop I have following suggestions-
1. Request for extension should be duly supported with plausible explanation;
2. The Registrar has to use his discretion not in a technical manner, but in the manner that is consistent with principles of justice, equity and good conscience
3. Lawyers need to calm down and not make a fuss about the technical ground, which drags the matter even further
4. One of the places where an amendment is required in The Trade Marks, 1999 is the area of extensions.
Therefore for me justice, equity and good conscience prevails over the statute.
Vaibhav Vutts
Copyright 2006
These are the views of the author and are not to be taken as legal advice.
With the passage of new Trade Marks Act of 1999 wef September 15, 2003, the time period to lead evidence was reduced to two months extendible at the most by one month calculated from the date of from the service of the notice of opposition or the services of evidence by the opponent on the applicant. Therefore maximum time of three months has been given to the opponent and applicant to lead their respective evidences in support of their submissions.
The immediate effect of this limitation to lead evidence was that the opposition proceedings have started to move faster and more and more oppositions have been appointed for final hearing in the past 3 years. Therefore it does seem that the limitation has its desired effect and of course the eagerness of lawyers and the Registrars to finish the matter has been contributory in the progress.
While this is a welcome change, there appears to one lacuna in the Trade Marks Act pertaining to seeking extension for the additional one month. The Section reads that the request for extension for a period of one month has to be filed “before” the expiry of two months.
This has led to several heartburns and problems as the lawyers depending upon which sides they are take up the plea for and against the grant of extension. Essentially the argument boils to that of Statute vs. the classic trilogy of justice, equity and good conscience.
From the point of view of statute, which if read as it is, clearly bars the filing of the evidence or refusal of the grant of extension by the Registrar. At the same time we cannot ignore the fact that if it is possible to decide a matter on merits and if the Act provides reasonable limits, then justice, equity and good conscience must prevail.
Accordingly I would say that the extension must be allowed even if the request for extension has been filed subsequent to two months. In fact to this extent the Trade Marks Act, gives discretionary powers to the Registrar whereby if the Registrar feels that a matter deserves to be granted extension then the same can be allowed.
End of the day one has to see if the Statute is meting out justice in the correct form, not by strictly following letters without the spirit. Harmonious construction of the Section is required and not strict interpretation to enjoy the benefit of the Act in letter and spirit
While this debate carries on, to draw parallel one requires to see how the Courts and Appellate Board have been treating the concept of leading evidence, even beyond the statutory three months period.
Once again strictly going by the book, the Trade Marks Act in India does not allow for an extension beyond 3 months.
At the same time in the interest of justice, equity and good conscience the Registrar should generally allows the evidence filed subsequent to the due date.
Here attention is drawn to a recent case of Asian Paints Limited v. Registrar of Trade Marks 2005(30) PTC 444 (IPAB), wherein in an appeal before the Intellectual Property Appellate Board it has been held that the Registrar enjoys the powers to extend the time for filing evidence even beyond the three month stipulated deadline.
In this interesting case it was held that the filing of evidence under the new Trade Marks Act has undergone changes of fundamental character. However the settled proposition of law is that the provisions of subordinate legislation have to be in conformity with provisions of principal legislation. It was also held that the society has vital interest in maintaining the purity of Register and for that matter should get to know the grounds for claiming the registration of the mark.
The decision in this case flowed from previous precedents and more importantly from the full Bench Judgment of Hastimal Jain v. Registrar of Trade Marks 2000 PTC 24 Del. In this judgment the court held that the extension-providing Rule in Trade Marks Act is directory, not mandatory. Therefore a direct interpretation of this is that the Registrar of Trade Marks is not under a mandate to deem the opposition as abandoned. In suitable cases, the Registrar can grant of extension for filing evidence in opposition.
From the above discussion, therefore it appears that grant of extension are directory and not mandatory. In those cases which merit extension, the extension should be given even if the request for extension is time barred.
The above decisions, I would say, are very good decisions as they take into account the not only the letter but also the spirit of law. After all what is the point of providing provisions for extensions in the system and then not allow because of a mere delay. A request for extension should be allowed to be filed at any time and such a request should be allowed as long as it is within the maximum period prescribed by the Act.
Of course there will be cases where extension are sought after the expiry of maximum limitation as prescribed, but these can be addressed upon the merits of each case and Registrar’s discretionary powers would also come in fore.
After all the decision of the opposition would effect the fate of a business and we do not want that due to technical reasons, a business comes to standstill. While malpractices have to discouraged, a reasonable explanation for filing an extension or a request for extension should be entertained.
In this backdrop I have following suggestions-
1. Request for extension should be duly supported with plausible explanation;
2. The Registrar has to use his discretion not in a technical manner, but in the manner that is consistent with principles of justice, equity and good conscience
3. Lawyers need to calm down and not make a fuss about the technical ground, which drags the matter even further
4. One of the places where an amendment is required in The Trade Marks, 1999 is the area of extensions.
Therefore for me justice, equity and good conscience prevails over the statute.
Vaibhav Vutts
Copyright 2006
These are the views of the author and are not to be taken as legal advice.
Friday, September 08, 2006
Should India allow data exclusivity, or just stick to data protection?
An interesting article on date exclusivity pulished in September 2006 issue of Business World by Gina S. Krishnan. Read on
Patently Contentious
Should India allow data exclusivity, or just stick to data protection?
GINA S. KRISHNAN
Interest groups are into their last round of hectic lobbying before the Satwant Reddy panel set up by the government decides on 6 September whether India should adopt data protection or data exclusivity in its patents regime under TRIPS Article 39.3. Reddy is the secretary, Ministry of Chemicals and Fertilisers.
The battle lines are clearly drawn between the lobby of innovator companies, mostly multinationals, and that of generics companies, largely Indian. They range from the Indian Pharmaceutical Alliance (IPA), Indian Drug Manufacturers Association (IDMA), and the Organisation of Pharmaceutical Producers of India (OPPI, representing the MNC lobby), US pharma lobby PhRMA, to individual companies, interest groups and NGOs.
“According to TRIPS, India needs to ensure protection of data during the life of the patent. There’s no clause which restricts the exclusivity of use of innovators data beyond the life of the patent,” says D.G. Shah, secretary general, IPA.
It is vital to innovators that India goes for data exclusivity because that would allow them to make it difficult for generics companies to make and sell a drug profitably even after the patent on it has expired. Generics companies, however, contend that such a regime would allow innovator companies to extend patent life beyond 20 years.
The price fall after patent expiry, as seen in the US, has been anywhere between 40 per cent and 80 per cent, depending on the size of the market and the number of companies that want to enter with generics. With the number of blockbuster innovator drugs coming to the market falling off in recent times, MNCs want to milk drugs they have discovered even after their patents expire.
As a member of the World Trade Organisation (WTO), India allows data protection. Patents are filed on a new chemical entity (NCE), or molecule, after it shows possibilities of developing into a usable drug. Thereafter, it has to go through development and trials and may, finally, get marketing approval, often more than a decade after the patent is filed. Data protection ensures that no other company can use the data generated to prove the usability of the drug during this period. Exclusivity ensures that this data cannot be used by others for 3-5 years after the concerned drug gets marketing approval.
Companies take the marketing approval for a specific country when they want to launch a drug there. It may be staggered across countries, and, therefore, may be valid even if the patent has expired elsewhere. Says Ramesh Adige, executive director, Ranbaxy Laboratories: “We support data protection. It should apply only to NCEs. Under no circumstance should it exceed the life of the patent.”
WTO members are divided over data exclusivity. While China has adopted it, Brazil has not. Nor have about 62 other WTO countries. “Data exclusivity is becoming such a contentious issue as it is not about respecting intellectual property, but about marketing exclusivity,” says an Indian industry insider.
Data exclusivity could also be used to carry out additional studies on a molecule beyond the life of the patent. Exclusivity or patent term extension could be sought and granted for isomers, new uses of existing products, and pediatric use of an old product. This is possible in the US and EU, which allow exclusivity.
India has to balance the interests of innovator and generic firms, keeping spiralling healthcare costs in mind. After all, it has one of the strongest generics drug industries in the world.
Patently Contentious
Should India allow data exclusivity, or just stick to data protection?
GINA S. KRISHNAN
Interest groups are into their last round of hectic lobbying before the Satwant Reddy panel set up by the government decides on 6 September whether India should adopt data protection or data exclusivity in its patents regime under TRIPS Article 39.3. Reddy is the secretary, Ministry of Chemicals and Fertilisers.
The battle lines are clearly drawn between the lobby of innovator companies, mostly multinationals, and that of generics companies, largely Indian. They range from the Indian Pharmaceutical Alliance (IPA), Indian Drug Manufacturers Association (IDMA), and the Organisation of Pharmaceutical Producers of India (OPPI, representing the MNC lobby), US pharma lobby PhRMA, to individual companies, interest groups and NGOs.
“According to TRIPS, India needs to ensure protection of data during the life of the patent. There’s no clause which restricts the exclusivity of use of innovators data beyond the life of the patent,” says D.G. Shah, secretary general, IPA.
It is vital to innovators that India goes for data exclusivity because that would allow them to make it difficult for generics companies to make and sell a drug profitably even after the patent on it has expired. Generics companies, however, contend that such a regime would allow innovator companies to extend patent life beyond 20 years.
The price fall after patent expiry, as seen in the US, has been anywhere between 40 per cent and 80 per cent, depending on the size of the market and the number of companies that want to enter with generics. With the number of blockbuster innovator drugs coming to the market falling off in recent times, MNCs want to milk drugs they have discovered even after their patents expire.
As a member of the World Trade Organisation (WTO), India allows data protection. Patents are filed on a new chemical entity (NCE), or molecule, after it shows possibilities of developing into a usable drug. Thereafter, it has to go through development and trials and may, finally, get marketing approval, often more than a decade after the patent is filed. Data protection ensures that no other company can use the data generated to prove the usability of the drug during this period. Exclusivity ensures that this data cannot be used by others for 3-5 years after the concerned drug gets marketing approval.
Companies take the marketing approval for a specific country when they want to launch a drug there. It may be staggered across countries, and, therefore, may be valid even if the patent has expired elsewhere. Says Ramesh Adige, executive director, Ranbaxy Laboratories: “We support data protection. It should apply only to NCEs. Under no circumstance should it exceed the life of the patent.”
WTO members are divided over data exclusivity. While China has adopted it, Brazil has not. Nor have about 62 other WTO countries. “Data exclusivity is becoming such a contentious issue as it is not about respecting intellectual property, but about marketing exclusivity,” says an Indian industry insider.
Data exclusivity could also be used to carry out additional studies on a molecule beyond the life of the patent. Exclusivity or patent term extension could be sought and granted for isomers, new uses of existing products, and pediatric use of an old product. This is possible in the US and EU, which allow exclusivity.
India has to balance the interests of innovator and generic firms, keeping spiralling healthcare costs in mind. After all, it has one of the strongest generics drug industries in the world.
PATENT TUSSLE: Philips locks horns with T-Series
This interesting article which appeared in Economic Time on 30th August 2006 deals with a licensing issues. Though on the face of it, the issue seems more of breach of trust, but it seems that T-Series is also raised the issue of challenging some of the patents of Phillips. Read On!!-
MUMBAI: Consumer electronics heavyweight, Royal Philips Electronics of Netherlands, and Indian music major T-Series have locked horns over royalty payments and non-compliance issues for a couple of patent license agreements.
The companies had signed the patent agreements for VCDs and CDs in ’03 and for DVD players & DVD-ROM players in November ’05. While Philips Netherlands has charged T-series of non-payment of royalty on all the three, Super Cassettes Industries, which owns the T-Series brand, is planning to petition the Delhi High Court.
T-Series will challenge Philips’s patent rights for some of the components being used. When contacted by ET, Philips officials said, “The major conflict with Super Cassettes is over a patent agreement for DVDs signed by one of their executive directors in November ’05. Sometime in December ’05-January ’06, they requested us to return our copy of the agreements stating that it needed to be countersigned by their managing director. In all fairness, we returned our copy to them, requesting them to return it after having it countersigned by their MD.
Instead of the agreement, we received a lawyer’s notice in March’ 06 denying that the agreement was ever signed. “Subsequently, they returned our copy of the agreements after cancelling the signatures. We have all documentary proof in writing to prove that the documents have been signed by Super Cassettes,” he pointed out.
Super Cassettes officials refrained from offering any official comments despite repeated attempts by ET. “Not all the components being used by Philips are novel. Some of them are in the general category. Yet Philips is taking royalties for them,” a top official from Super Cassettes said on condition of anonymity.
Philips Electronics, NV, Sony, Pioneer and LG Electronics have started a joint patent license programme which covers essential patents for DVD-Video and DVD-ROM. Philips and their partners in these license programmes own a number of patents and have a number of patent applications pending relevant to DVD systems, which are licensed by Philips to DVD disc and player/recorder manufacturers.
By acquiring licenses from Philips under one of the DVD patent license programmes, manufacturers will be allowed to use the patents of Philips and their partners for the relevant DVD products.
Samsung currently imports its DVD requirements from its parent company in Korea who pays the royalty. LG imports partially from Korea and also sources it locally in India for which it pays royalty to Philips Netherlands.
Super Cassettes now has TVs, DVDs and VCDs in its product portfolio. The DVD market totals about 4m units with Philips claiming to be the brand leader, with 21% share followed by Onida and LG. Much of the market is also taken up by regional brands.
Source- Economic times -KALA VIJAYRAGHAVAN AND RASHMI PRATAP TIMES NEWS NETWORK
[ WEDNESDAY, AUGUST 30, 2006 01:26:41 AM]
[ WEDNESDAY, AUGUST 30, 2006 01:26:41 AM]
No approval is required from RBI now for remittances for the use and purchase of trademark
In the past, as per Foreign Exchange Management (Current Account Transactions) Rules, 2000, there was a requirement of RBI’s prior approval for remittances towards purchase of trademark and franchise.
With effect from 10th July 2006 in a Notification issued by the Foreign Exchange Department of the RBI it has been stated that no approval is required from now on for remittances for the use and purchase of trademark
The notification states as below-
"In the Foreign Exchange Management (Current Account Transactions) Rules, 2000, in Schedule III, item number 16 and the entry relating thereto shall be omitted."
This change is definitely good for foreign companies that are investing in India as it further eases the entry of foreign companies in India
With effect from 10th July 2006 in a Notification issued by the Foreign Exchange Department of the RBI it has been stated that no approval is required from now on for remittances for the use and purchase of trademark
The notification states as below-
"In the Foreign Exchange Management (Current Account Transactions) Rules, 2000, in Schedule III, item number 16 and the entry relating thereto shall be omitted."
This change is definitely good for foreign companies that are investing in India as it further eases the entry of foreign companies in India
Wednesday, September 06, 2006
BLENDERS PRIDE
This is a very interseting article I got from the online edition of the newsletter of K& S Partners. Thought i should blog it. So read on-
Can the first user of a mark internationally supersede the first user in India?
This was the main issue that fell for consideration before the High Court of Delhi in Austin Nichols & Co. and Anr. Vs. Arvind Behl&Anr. (unreported – decided on November 29, 2005).
The mark involved in this case is ‘Blender’s Pride’ owned and used by the plaintiffs in respect of whisky manufactured worldwide by them since 1973. Thewhisky manufactured by the plaintiffs’ under the mark Blender’s Pride has sincebeen sold in over 50 countries and enjoys a tremendous reputation in India since the late 1980s and 1990s through foreign visitors, satellite channels and the internet.
The plaintiffs were unable to sell their whisky under the said mark in India until1995 due to the then prevailing policies of the Government of India. In 1995, theyapplied for registration of their mark in India.
The defendants, local manufacturers of alcoholic drinks, claimed that they have been selling their whisky under the trademark ‘Blender’s Pride’ since 1993-94 but temporarily discontinued production thereafter until 2004-05. The Action was instituted by the plaintiffs in February 2005 on the allegation that the defendants are passing off their whisky as that of the plaintiffs.
The main defence raised by the defendants was that they adopted the mark in India in 1993-94, which is prior to its adoption by the plaintiffs in India.
While deciding the case, the court raised two points: first, that by their own averments in the suit, the defendants are ‘one of the largest, most reputed and well-established manufacturers and distributors of liquor ’ ; this being so, how could they not have known of the presence or existence of the plaintiffs’ mark ‘Blender’s Pride’ in the international market.
Secondly, the plaintiffs have stated in the pleadings that they have held asmany as 20 promotional events for Blender’s Pride (the defendants have notdenied this statement) in India from January 2001 onwards; the defendants, being in the same business as that of the plain tiffs, should have been aware of this and should have taken appropriate steps to prevent the plaintiffs from exploiting the mark ‘Blender’s Pride’.
As regards the main defence raised by the defendants, the court went on to examine the effect of the plaintiffs being the first and perhaps the only manufacturers of ‘Blender’s Pride’ whisky internationally and the second in India. Having analysed the various precedents including the Milmet case decided by the Supreme Court of India, the court held that the plaintiffs having come out with the Blender’s Pride whisky first in the international market were first past the post even though the defendants were the first to do so in India. Further, a cost of Rs.18,850,000(approximately US$38,000) was awarded to the plain-tiffs as legal costs.
The judgment is a lesson to all those infringers who believe that foreign marksare up for grabs before the proprietor makes a physical entry into India.
© 2006 K&S Partners, New Delhi.
Can the first user of a mark internationally supersede the first user in India?
This was the main issue that fell for consideration before the High Court of Delhi in Austin Nichols & Co. and Anr. Vs. Arvind Behl&Anr. (unreported – decided on November 29, 2005).
The mark involved in this case is ‘Blender’s Pride’ owned and used by the plaintiffs in respect of whisky manufactured worldwide by them since 1973. Thewhisky manufactured by the plaintiffs’ under the mark Blender’s Pride has sincebeen sold in over 50 countries and enjoys a tremendous reputation in India since the late 1980s and 1990s through foreign visitors, satellite channels and the internet.
The plaintiffs were unable to sell their whisky under the said mark in India until1995 due to the then prevailing policies of the Government of India. In 1995, theyapplied for registration of their mark in India.
The defendants, local manufacturers of alcoholic drinks, claimed that they have been selling their whisky under the trademark ‘Blender’s Pride’ since 1993-94 but temporarily discontinued production thereafter until 2004-05. The Action was instituted by the plaintiffs in February 2005 on the allegation that the defendants are passing off their whisky as that of the plaintiffs.
The main defence raised by the defendants was that they adopted the mark in India in 1993-94, which is prior to its adoption by the plaintiffs in India.
While deciding the case, the court raised two points: first, that by their own averments in the suit, the defendants are ‘one of the largest, most reputed and well-established manufacturers and distributors of liquor ’ ; this being so, how could they not have known of the presence or existence of the plaintiffs’ mark ‘Blender’s Pride’ in the international market.
Secondly, the plaintiffs have stated in the pleadings that they have held asmany as 20 promotional events for Blender’s Pride (the defendants have notdenied this statement) in India from January 2001 onwards; the defendants, being in the same business as that of the plain tiffs, should have been aware of this and should have taken appropriate steps to prevent the plaintiffs from exploiting the mark ‘Blender’s Pride’.
As regards the main defence raised by the defendants, the court went on to examine the effect of the plaintiffs being the first and perhaps the only manufacturers of ‘Blender’s Pride’ whisky internationally and the second in India. Having analysed the various precedents including the Milmet case decided by the Supreme Court of India, the court held that the plaintiffs having come out with the Blender’s Pride whisky first in the international market were first past the post even though the defendants were the first to do so in India. Further, a cost of Rs.18,850,000(approximately US$38,000) was awarded to the plain-tiffs as legal costs.
The judgment is a lesson to all those infringers who believe that foreign marksare up for grabs before the proprietor makes a physical entry into India.
© 2006 K&S Partners, New Delhi.
SCOTCH is a Geographical Indication in India
This is another Scotch Whisky victory and this time a big one. Terms such as SCOTCH, SCOT, SCOT, SCOTTISH have bneen declared as Geographical Indications by the Courts. As i say Read On!!-
NEW DELHI: In a development that could jolt the burgeoning liquor industry, the Delhi High Court has held that the Indian whisky manufacturer cannot use the word “scot” or “scotch” in compliance with the WTO agreement.
In the first ruling in India relating to the protection of Geographical Indications (GIs) under the WTO-TRIPS agreement, Justice Madan B Lokur agreed that the words “scot” or “scotch” identify whiskey produced in Scotland and no domestic manufacturer can use them to market its liquor.
The judgement was delivered on a lawsuit filed by the Scotch whiskey association of UK seeking to restrain permanently, an Indian whiskey manufacturer from using the name “Red Scot” or any other name containing the word “scot” to sell its product.
While decreeing the suit ex-parte, the court directed Golden Bottling, operating from Delhi and Alwar in Rajasthan, to pay damages of Rs 5 lakh to the UK-based Scotch Association and its members for passing off its whiskey as scotch whiskey.
The court accepted the arguments of advocate Pravin Anand, an IPR expert, that under the WTO-TRIPS agreement, protection was provided for GIs, which identifies the good originating in the territory of a member or the goods which are essentially attributable to its geographical origin. “I am satisfied that the domestic manufacturer is liable to be restrained from passing off its ‘red scot’ whiskey as a produce of Scotland.
This can only be done by injuncting it from using the word ‘scot’ or any other word similar therto in the whiskey manufactured by it,” the judge said. The court added that since domestic manufacturers did not prefer to contest the lawsuit, it appears they were not averse to dropping the word ‘scot’
The suit was filed under the Geographical Indications of goods (registration and protection) Act, 1999, which was enacted as a result of the WTO-TRIPS agreement. Mr Anand had alleged that Golden Bottling was using the word “scot” to pass off its whiskey by giving an impression that it orginates in Scotland or that it was scotch whiskey.
The association had claimed damages contending that the reputation of scotch whiskey has been irreparably damaged by the use of word “scot” in whiskey manufactured by the domestic company.
Accepting arguments that the sale and manufacture of the whiskey were in violation of the new law, Justice Lokur said, “In view of the well settled law laid down by this court and reiterating the necessity of preventing a violation of IPR of parties, I think it would be appropriate, if the damages as prayed by the association to the extent of Rs 5 lakh are granted”. The court also directed Golden Bottling to pay Rs 3.1 lakh as litigation cost to the scotch whiskey association.
Source -Economic Times
Reported - MONDAY, APRIL 24, 2006 01:35:26 AM on Economic Times Website
US seeks Indian partnership in IPR protection
The below article is an indicator that there is bound to be growth in IP in India. what we have done till now is nothing compared to what is in store for us!! Read on-
BANGALORE: The United States on Wednesday May 17, 2006 urged India to join hands with it for Intellectual Property Rights protection.
"A thriving, diversified economy must protect its IPR. India and US which are partners in growth must be partners in IPR protection too," Christian Israel, US Coordinator for International IPR said while addressing the members of Bangalore Chamber of Industry and Commerce (BCIC) here.
"Intellectual property is a huge economic driver for the US. While US government spends nearly USD 135 billion on R & D activities related to healthcare, energy and security related fields, private sector invests USD 200 billion," Israel said.
Israel, who during his three-day visit met trade representatives and government officials in New Delhi said, "We are talking to different people on how India can be a partner in innovation, growth and in IP protection". "We are also inviting best possible patents from India. We learnt that India has prepared a traditional database comprising 157,000 items. We are in the process of forming a working group to address concerns regarding post patent", he said.
About apprehensions on awarding patents for traditional Indian products like Basmati rice and turmeric, Dominic Keating, US Attorney of Trademarks office based in New Delhi said, "a second patent has been sought in US for such products and it relates to conducting research and development of base products".
A lot of work can be done in the development of traditional products and IPR protection will help Indian industry as well, he said.
Source - Economics Times Online Edition PTI WEDNESDAY, MAY 17, 2006 08:20:41 PM
Tuesday, September 05, 2006
Ranbaxy wins on two additional Atorvastatin patents in Norway
This is an interesting IP development, especially for India. Read on-
Ranbaxy Laboratories Ltd has announced that a Norwegian court today handed down a favourable decision for the Company in its case against Pfizer, involving two patents on atorvastatin in Norway.
Atorvastatin is a cholesterol-lowering drug which is marketed by Pfizer as Lipitor®.The Oslo City Court sided with the Company by finding non-infringement of two of Pfizer´s Norwegian patents (No. 177,566 and No. 180,199) covering particular intermediate compounds.
Earlier in November 2005, the Norwegian Court had found the Company´s atorvastatin product not to infringe one of Pfizer´s process patents (No. 309,322) but to infringe another of Pfizer´s patents (No. 177,706) covering a particular intermediate compound.
The Company has already appealed to the Norwegian Court of Appeals against the negative judgment on the one remaining intermediate compound patent."This is a most important decision for Ranbaxy, as it significantly validates our position regarding the atorvastatin patents," said Jay Deshmukh, Senior Vice President, Global Intellectual Property for RLL.
"We will continue to actively pursue all of our options in Norway and other markets in order to bring affordable atorvastatin to patients around the world."
Source: Equity Bulls
I have taken this article from Equitybulls.com. so all rights over this article are reserved with Equity Bulls and this is merely for information and postoing on this blog
Monday, September 04, 2006
A RARE BLEND
Recently in May 2006 Mr. MC Gupta, Assistant Registrar of Trade Marks, Kolkata passed a order refusing registration to the mark RARE BLEND in relation to “alcoholic beverages”. The action was brought by Scotch Whisky Association (SWA) that had filed a trademark opposition against the registration of the mark RARE BLEND for alcoholic beverages.
To briefly tell you about SWA, take note that SWA represents the interest of Scotch Whisky Manufacturers, distillers and bottlers all over the world. SWA is very active in protecting Scotch which is a geographical Indication and takes actions against third party adoption and / or use of the words that are evocative of Scotland or United Kingdom and which may indicate the origin of the alcohol as from Scotland. Terms such as SCOT, SCOTT, SCOTCH, SCOTTISH, MC, MAC, BLEND, FORT WILLIAM, GLEN etc. have all have been held by the Courts and Registries in India as evocative of Scotland especially if used in relation whisky.
The contention of SWA was that the term BLEND is defined in the UK legislation as one of the methods during the preparation of Scotch Whisky and the term RARE is defined in dictionary as “one of its kind”. The term BLEND is also defined in the Indian Legislations as well in numerous books on Scotch Whisky as a process for mixing whiskies finding its origin back to Scotland.
Apart from the legislations there are numerous Scotch Whisky Manufacturers abd distillers that that use the term BLEND or RARE BLEND to describe their whiskies. Being so the grant of registration to the mark RARE BLEND would have been contrary to Section 9 of the Indian Trade Marks Act.
SWA led substantive evidence in support of its contentions and the Registrar was convinced that the grant of Registration to the mark RARE BLEND would be contrary to the bonafide interests of traders and that the mark RARE BLEND is not capable of being distinctive.
This case highlights that Indian Trade Marks Registry is sensitive to the issues which involve geographical indications and if the action is properly filed, then there is always a remedy.
SWA is also an example as how associations can be proactive about their rights and trademarks by taking constructive steps against third party adoption of geographical indications.
To briefly tell you about SWA, take note that SWA represents the interest of Scotch Whisky Manufacturers, distillers and bottlers all over the world. SWA is very active in protecting Scotch which is a geographical Indication and takes actions against third party adoption and / or use of the words that are evocative of Scotland or United Kingdom and which may indicate the origin of the alcohol as from Scotland. Terms such as SCOT, SCOTT, SCOTCH, SCOTTISH, MC, MAC, BLEND, FORT WILLIAM, GLEN etc. have all have been held by the Courts and Registries in India as evocative of Scotland especially if used in relation whisky.
The contention of SWA was that the term BLEND is defined in the UK legislation as one of the methods during the preparation of Scotch Whisky and the term RARE is defined in dictionary as “one of its kind”. The term BLEND is also defined in the Indian Legislations as well in numerous books on Scotch Whisky as a process for mixing whiskies finding its origin back to Scotland.
Apart from the legislations there are numerous Scotch Whisky Manufacturers abd distillers that that use the term BLEND or RARE BLEND to describe their whiskies. Being so the grant of registration to the mark RARE BLEND would have been contrary to Section 9 of the Indian Trade Marks Act.
SWA led substantive evidence in support of its contentions and the Registrar was convinced that the grant of Registration to the mark RARE BLEND would be contrary to the bonafide interests of traders and that the mark RARE BLEND is not capable of being distinctive.
This case highlights that Indian Trade Marks Registry is sensitive to the issues which involve geographical indications and if the action is properly filed, then there is always a remedy.
SWA is also an example as how associations can be proactive about their rights and trademarks by taking constructive steps against third party adoption of geographical indications.
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